IPBiz

Monday, April 30, 2007

Potential bad news for Thomson / WARF resides in the text of the Supreme Court decision in KSR v. Teleflex: "The same constricted analysis led the Court of Appeals to conclude in error that a patent claim cannot be proved obvious merely by showing the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under section 103."

Also: "Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it."

One notes that "common sense" becomes an excuse not to write down a reason, or a substitute for a reason (e.g., common sense shows that a person of ordinary skill would have combined reference A with reference B.) Whose common sense?

In a nutshell, a unanimous Court overturns the appellate decision on the ground that the test of “obviousness” used below misunderstood the proper use of prior art in considering the validity of a combination patent; and, more generally, the Court of Appeals was too rigid and did not allow the fact finder recourse to common sense. The Court recognized the risk that too many inventions would seem “obvious” by hindsight, but said only that the appellate court took the wrong approach to the problem.

IPBiz query: did the Supreme Court say the CAFC misunderstood the use of prior art?

Singleton also wrote: A more narrow opinion that still addresses the substantive issue of obviousness is hard to imagine. There was little guidance from the Court on the systemic issues raised by amici and the parties, such as evidentiary standards, presumptions of validity, how or why to improve the examiner’s and the courts’ access to the opinions of “persons of ordinary skill in the art,” and so on. The Court notes that the question of obviousness is a question of law (and therefore is for the judge to determine), but at the same time recognizes that far more will usually be needed to resolve each question than the mental processes of the judge, informed by common sense. Here the Court’s failure to give more direction is most frustrating. Treating obviousness as a question of mixed law and fact or even a matter for “judicial notice” might point to more concrete solutions to the problem (setting aside the appalling prospect of the question going to the jury).

IPBiz notes that the nonprecedential KSR v. Teleflex CAFC decision had nothing to do with evidentiary standards or presumptions of validity. It was about whether or not one had to write down a reason for combining references. Now one sees one doesn't have to write down a reason. One can say "common sense indicates one of ordinary skill would have combined these references."

Dennis Crouch wrote: Instead, the opinion appears to simply refine the particulars of how prior-art can be combined and when a "combination patent" will be seen as obvious. Inventions that introduce the world to entirely new concepts and elements will continue to be more valuable.

But let's go back to Thomson's '780 patent on the isolation and maintenance of human stem cell lines. It is undisputed that Thomson was the first person to isolate and maintain human stem cell lines. Does this qualify as introducing to the world an entirely new concept? Jeanne Loring would say "no." Terri Somers would say "no." Ariff Bongso recognized one could get human stem cells from blastocysts, and, separately, others had isolated and maintained stem cell lines from other animals such as mice. Is Thomson's patent just a combination patent now susceptible to the new "obvious to try" standard? Human stem cells were available in blastocysts AND recipes for isolating and maintaining (non-human) stem cells were available in "recipes." Obvious to try? Was there a market pressure to solve a problem (isolate and maintain human stem cells) and were there are a finite number of identified, predictable solutions (recipes)? Hmmm, in a world in which there are no human stem cells, is there a market pressure to isolate and maintain them? Probably not. In a world in which there are no airplanes, is there a market pressure to develop three dimensional control systems for airplanes? No. But what if someone creates a prize to do something that has not yet been done? Is that market pressure?

In a letter to Gulbrandsen, the Foundation's John Simpson wrote: "As WARF's managing director you clearly have a vested interest in the Patent Office's operations as it contemplates rejecting those over-reaching patents. Already an initial office finding has denied all of your claims. While the cases are pending it is inappropriate for you to have such direct access to the highest levels of PTO decision making."

Microsoft beats AT&T at Supreme Court

The Scotus blog said: The Supreme Court, in a major victory for Microsoft Corp., ruled by a 7-1 vote on Monday that U.S. patent law does not bar foreign making of copies of digital code to be installed in computers made and sold abroad. Current patent law does not reach that far, Justice Ruth Bader Ginsburg wrote for the Court. If patent law is to be adjusted to account for "the realities of software distribution," that is up to Congress, the Court said. Justice John Paul Stevens was the lone dissenter; Chief Justice John G. Roberts, Jr., took no part in the ruling. The case was Microsoft Corp. v. AT&T (05-1056).

At page 11 of the Supreme Court opinion Justice Kennedy writes: "We begin by rejecting the rigid approach of the Court of Appeals." In this, Justice Kennedy is treating the matter as a combination of known elements case, and notes that the combination of old elements is likely to be obvious when it (the combination) does no more than yield predictable results. Kennedy brings up previous cases, first the Adams battery case from 1966, then the asphalt case from 1969, and finally the Sakraida case from 1976. At page 13, one has discussion of "the predictable use of prior art elements according to their established functions."

Kennedy notes that "To facilitate review, this analysis should be made explicit," citing to the CAFC, 441 F.3d 977, BUT Kennedy also notes "a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." At page 15, Kennedy writes: "Helpful insights, however, need not become rigid and mandatory formulas; and when it so applied, the TSM test is incompatible with our precedents." Kennedy speaks of an "overemphasis on the importance of published articles and the explicit content of issued patents." [IPBiz: oh no! This is going to come back later.] Kennedy directly addresses concerns put forth by the IT community: "In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility." [IPBiz: think about that sentence for a moment. Think about how it might be applied in the Thomson / WARF stem cell matter.] Kennedy concludes this section of the opinion with the statement: "But when a court transforms a general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs."

The Supreme Court opinion gets interesting at page 16, at the point wherein the Supreme Court identifies specific errors of the CAFC. Keep in mind, the CAFC KSR opinion was NOT precedential, and only found that the district court had not written down a reason to combine the references.

Speaking of a known problem for which there was an obvious solution encompassed by the patents claims, Kennedy noted that the first error of the CAFC was holding that courts/patent examiners should only look to the problem that the patentee was trying to solve. Huh? The punchline is that "any need or problem in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining." This thinking shows up again at page 20 of the opinion: "The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor." This analysis, however broad, is directed to the TSM test, and shows that the TSM inquiry may be more easily answered than indicated by the CAFC.

HOWEVER, the second error of the CAFC identified by the Supreme Court has implications transcending than the TSM inquiry. At pages 16-18 one gets into the revolutionary aspects of the opinion. In the sentence beginning "Common sense teaches ..." and going throught to the sentence "A person of ordinary skill is also a person of ordinary creativity, not an automaton," one seens an "upgrade" in the "person of ordinary skill" category. At page 17, it looks like it's curtains for the "obvious to try with a reasonable expectation of success" standard. Something can be obvious under 35 USC 103 JUST BECAUSE it's obvious to try. The Supreme Court noted the issue of hindsight bias, but concluded that "rigid preventative rules" are not the answer. [In this sense, the Supreme Court decision does look like that predicted by IPBiz along Daubert lines.]

At page 18, the Supreme Court offers the CAFC "a way out" via the use of post-KSR decisions of the CAFC.

On May 20, 1914, the Buffalo Express wrote of efforts by Glenn Curtiss to resurrect, and to fly, the pre-Wright Langley aerodrome: If the Langley aerodrome flies, several chapters of aviation history will have to be rewritten.

The journal Aeronautics ran an article by a patent attorney which claimed the Wright case was overblown. There was discussion of "parsimonious concern for an old patent."

On the other side of the coin, a man named Brewer lambasted the restoration of Langley's aircraft as a premeditated hoax. [As an aside, the so-called "Piltdown Man" consists of fragments of a skull and jawbone collected in 1912 from a gravel pit at Piltdown, although the "hoax" aspect of Piltdown man was not established for many years. In contrast, problems quickly enveloped Curtiss, arising from many things, including his trimming of the propellor blades of the aerodrome.]

Flash forward to the San Diego Union Tribune article of 2007, with the role of Curtiss played by Loring and the role of Langley played by Bongso, with Thomson filling in for Orville Wright.

Babe Parilli, former University of Kentucky star quarterback under the great Coach Bear Bryant, College Hall of Fame Quarterback, a sixteen-year former ALL-Star NFL and AFL Quarterback, helped invent a new patented product called the Autograph Kit.It will be introduced at the CMA Music Fest in Nashville, Tennessee, June7th through June 10th.The patented Autograph Kit contains a Fuji 400 film with 27 flash and aSharpie Pen and ten autograph "slips." This kit will allow a person to getan autograph and possibly a picture with one of the performers at the CMAFest. You have the celebrity sign the electrostatic "slip" with a SharpiePen, get the picture, and then when you get the picture developed youadhere the static cling "Slip" to the picture. For those who have theircameras, we will offer twenty-four autograph "slips" and a Sharpie Pen forthe same price. http://www.autographkit.com

Apple has admitted that some batteries in its Macbook and Macbook Pro line of laptops have 'performance issues' and has issued a software update to fix the problem.

Among the symptoms of batteries that are affected are swelling, the battery not being recognised or not charging, and a shorter than expected battery life.

The company said that the problem, which could affect any laptop or batteries bought between February 2006 and April 2007, 'is not a safety risk' and has offered to replace any defective batteries. In the meantime, users could continue to use their current battery, Apple said.

Compensation to egg donors, in IVF and in stem cell research

While at a scientific meeting in the IVF area on April 29, I had an opportunity to ask many people (from California and elsewhere) about Proposition 71, Cha, and other matters. I could not find anyone who had heard of K.Y. Cha, or the issues surrounding the CIRM grant to a Cha entity (RMI). Somebody from Columbia University had heard of Rogerio Lobo (and of the paper in JRM), but all she remembered was that Lobo had been removed as author from a paper. The person did not know what the paper was about, or that K.Y. Cha was a co-author. Further, the Columbia person had no knowledge of the the Sames - Sezen matter. It's highly likely that there will be no traction in the Cha matter as to the grant by CIRM. Most people have not heard of the papers in Fertility & Sterility and in JRM, or even of the grant to RMI.

There was a "debate" about paid compensation for egg donors, of course mainly directed to women furnishing eggs for use in IVF, rather than for use in embryonic stem cells. One MD brought up the inconsistency between the furnishing of sperm by males and the furnishing of eggs by females. He did not mention that males can make more sperm, but a female cannot make more eggs. He did mention that ASRM has put forth a guideline for the maximum amount a female can be paid. There was not much discussion about the concerns of former California state senator Ortiz. I brought up Ortiz, and the issues with coerced "donation" of eggs in the Hwang Woo Suk matter. I also pointed out that the "economics" of compensated egg "donation" are different between IVF and stem cell research. The response of the MD was interesting. Rather than addressing the coercion matter in the Hwang case, he launched into a tirade about how people are using a bad example to attack legitimate research. Thus, the "Hwang as a bad apple" defense. A bioethicist responded that the economics are different between IVF and stem cell research, as if that answered the issue about coercion.

Merely, to return to Sames - Sezen a minute, the following is from a post on a blog (which appeared 26 Sept 06 AND which seems to presume that Sezen was engaging in fraud; the blog is Occam's Blog, occams.blogspot.com):

Thanks to Chemistry & Engineering News, the Sames/Sezen Scandal is back in the news. Yesterday the following letter from Paul Mengnjoh appeared on their site:

I was disappointed to read that Columbia University chemistry professor Dalibor Sames retracted four more scientific papers (C&EN Online Latest News, June 16). I wonder if this is a trend of a professor and student getting into serious trouble and putting the future of U.S. chemistry, which is the envy of the world, in jeopardy.

I was also surprised to learn that Sames was asked to police himself by trying to redo the experiments, while the student who conducted the experiments had moved on to a German university and was pursuing a doctorate in another subject area. Can someone at ACS explain to us what is really going on here? Should professors supervising graduate students in chemistry be more vigilant in monitoring what is going on in their labs and making sure our chemistry research is not tainted by students who are not careful in recording their findings in lab notebooks? The lab notebooks should be carefully examined before signing off on students' findings so that we don't have the situation that has happened at Columbia. I'm sure other ACS members would also like the answer to the questions I have raised here.

Of course, no one in the ACS ever "explained" what was going on in the Sezen matter. The blogger continued:

Mengnjoh's letter hits on some important points; please allow me to elaborate. This matter cannot be isolated to the school, the faculty member or the graduate student involved in this situation. The chemistry community must take this grave situation as a warning of what atrocities can occur when the mentor-mentee relationship begins to break down. Assuming that Sezen's results are all but fake, her actions are simply inexcusable. The fact that these lies made it out of the Sames lab are a failure of its leaders, Dalibor, and his group as a whole.

The blogger acted as if the matter would create massive doubt about chemistry on behalf of the general public:

If it was pressure from Sames that drove her to fake these results, what drove him to put undue pressure on his students? Is he just naturally a slave driver? Or was it the ultra-competitive funding situation in the U.S.? Why didn't he look at her primary data? Did he?

These pressures affect more than just Sezen and Sames - they are truths of our world. To ignore this situation as a unique and unrepeatable conflagration of events is immature. This situation is what can result from the system that has been created. There are more graduate students like Bengu, and more faculty members like Dalibor, and if something isn't done to repair the system that allowed this to happen, then it will happen again. How many multi-paper retractions from a prestigious university do you think the general public needs to start doubting the entire field of chemistry?

One knows that "global doubt" in the general public caused by the Sezen matter, or many Sezen matters, will not appear. The matter of Hwang Woo Suk, which involved clearly fraudulent science in an area of great public interest (stem cells; SCNT) AND serious coercion of subordinates seems to be dismissed under the "bad apple" rubric. In fact, the citizens of California are paying another Korean research entity to undertake the same research (human SCNT) that Hwang purported to do. There is "no doubting" appearing in the general public about the entire field of human SCNT.

At the IVF meeting on April 29, I also talked with a cord blood person working in California. Even though Proposition 71 does not directly benefit his area, he still thought it was a good idea to be doing the research. He's never heard of Cha, Cha's IVF facility in LA, or of the CIRM grant to RMI. He did know of Branson's entry in cord blood.

Saturday, April 28, 2007

William Heisel of the Los Angeles Times wrote on the recent decision by Fertility & Sterility to retract the Cha paper:

In an upcoming issue, Fertility and Sterility will publish a statement retracting the article because of "duplicate publication," said Sean Tipton, a spokesman for the American Society of Reproductive Medicine, which oversees the journal.

The journal's editor, Alan DeCherney, had said earlier that he believed the article to have been plagiarized. Tipton said this week that the problem was rather that it had been published elsewhere, which violated the journal's rules, and suggested that the responsibility rested with Cha's underling, Sook-Hwan Lee, who submitted the article to Fertility and Sterility.

Of the issue of whether or not there can be self-plagiarism, Heisel wrote:

Tipton said the society followed the rules of the World Assn. of Medical Editors, which say that plagiarism essentially is authors stealing from each other. This case would not meet that definition because two of the authors were the same on both of the papers: Lee and Sung Won Cho.

Previously published material can be cited in a manuscript, but it must be indicated by quotation marks. If more than 200 words from a previously published manuscript appear in a manuscript that is submitted as an original work and if this material is not indicated with quotation marks, the material will be considered to be plagiarized. Plagiarism is also a serious offense.

There is NO LIMITATION WHATSOEVER on "who" did the previous publishing. Furthermore, even taking the presently offerred explanation of non-plagiarism ("This case would not meet that definition because two of the authors were the same on both of the papers: Lee and Sung Won Cho"), there would STILL be plagiarism UNLESS Lee and/or Cho WROTE every word in the KSOG/KJOG article. Given that the words of the KSOG/KJOG paper previously appeared in Kim's thesis (of which Lee and Sung Won Cho were NOT authors), one suspects there is a problem with the non-plagiarism explanation.

The Times also has the text:

But experts contacted by The Times said they thought the American Society for Reproductive Medicine made the right decision.

"It's clearly egregious, but it would not rise to a level of what we would call plagiarism because of the common authorship, no matter how limited it might be," said John Dahlberg, director of the Division of Investigative Oversight for the federal Office of Research Integrity.

IPBiz notes that in the patent business, one goes to the fine detail of "who contributed to which claims." The FOCUS is on WHAT ONE AFFIRMATIVELY CONTRIBUTED. If a person contributed to a claim, but was NOT named as an inventor, there would be a PROBLEM, which would NOT be excused because some named inventors contributed to OTHER claims. Dahlberg is simply wrong in suggesting that "common authorship" would vitiate a finding of plagiarism if the name of a contributing AUTHOR was OMITTED. Here, given that the work came from Kim's thesis, it would seem that the name of the PRINCIPAL author was omitted.

It might appear that the Los Angeles Times (which itself was threatened with a lawsuit by the Cha folks) is willing to bury this story.

Motorola obtained an order granting summary judgment of non-infringement in a patent case brought by the Board of Regents of the University of Texas System (“University of Texas System”). The Federal District Court for the Western District of Texas issued an order finding that certain Motorola handsets do not infringe U.S. Patent No. 4,674,112 (“the ‘112 patent”).

University of Texas System, represented by Michael W. Shore of the Dallas law firm of Shore Chan Bragalone, has asserted the ‘112 patent against Motorola and over 30 additional handset manufacturers. Shore has claimed that the ‘112 patent covers software used for text messaging on nearly all mobile handsets and that University of Texas System is owed hundreds of millions of dollars in damages. In rejecting Shore’s claims, the Court found that University of Texas System is trying to interpret the claims of the ‘112 patent in a manner inconsistent with what University of Texas System’s lawyers told the Patent Office in order to obtain the grant of the ‘112 patent. “Plaintiff cannot have it one way at prosecution and another way during infringement litigation”, the Court stated.

"The University waited silently for many years while Motorola and many other companies developed text-entry technology for mobile phones, then claimed millions of dollars in damages only as the patent expired," stated Jonathan P. Meyer, Motorola, senior vice president for intellectual property law, in a written statement.

If there is a patent troll in this matter, it is the University of Texas.

Going into the hearing, the Chairman clearly recognized the total impasse from the last Congress over "second window" post-grant review and that the current legislation as introduced is dead in the water.

Wegner continued on post-grant review (post-grant opposition), noting that misuse in the current re-examination system may predictably be carried over into the proposed post-grant review:

Perhaps the single most constructive development that arose from the hearing [of April 26, 2007] was the focus upon the abuse of the current reexamination system that foreshadows similar problems under the proposed post-grant review system: Serial reexaminations and post-litigation reexaminations even after a final court decision have been unreasonable and made it impossible for the winner of a trial costing the parties millions of dollars to enjoy a quiet patent title: Even after winning at trial, reexaminations can be filed that may take many years to resolve, some just rehashing old issues lost at trial.

Wegner illustrated that pharma was NOT buying into the "second window":

Quite clearly, the Amgen testimony, better than any representative for any of the various organizations, demonstrated the absolute, positive necessity the biotechnology community has for a highly reliable post-grant proceeding and one where there is early, quiet patent title ensured. Amgen persuasively explained the position of his company in a scenario that is echoed by all major pioneer pharma and biotech entities and manifests the futility of any attempt to ram through Congress a one-size-fits-all "second" window solution.

Wegner did not note that there might be smaller players, in the IT industry and elsewhere, who might have similar opposition to the "second window." The problem is not just "industry specific." Investing in a massive system of patent re-inspection violates the basic quality precepts taught by Deming.

Wegner also wrote: It must be remembered that the 1980 original reexamination law could have been effective, including inter partes participation and including expedited consideration, all possible within the scope of the reexamination law and certainly within the budget of the PTO. The fact that the PTO today denies the "special dispatch" examination of a reexamination proceeding of importance speaks for itself. There is nothing to preclude a PTO-run post-grant review from similar political interference from the Director.

Wegner also noted that the OPPOSITION of the 21st Century Patent Coalition SEPARATELY spells doom for the current patent reform legislation:

Gary L. Griswold, 3M, for the 21st Century Patent Coalition spoke, as usual, strongly opposing any "second window" post-grant review and opposing other IT/EE initiatives. While the death of the current legislation is a certainty with or without the strident voice of the 21st Century Patent Coalition, the intransigence of the 21st Century Patent Coalition is perhaps the best indicator that no Phoenix can ever arise from the ashes of the current legislation.

To test questionable patents after they are issued, the Coalition supports a post-grant opposition proceeding in the USPTO where the public can promptly (within 9 months of grant) challenge the validity of a patent on any ground, but with incentives that encourage the public to promptly bring such challenges and with protections for inventors against harassment. To make this type of validity challenge administratively feasible, however, it is essential that it be accompanied by three other changes – limit “prior art” to publicly accessible information through adoption of the firstinventor-to-file principle, repeal the “best mode” requirement, and limit the unenforceability defense to cases of actual fraud on the PTO.

While the Coalition notes that the recommendations of the NAS and FTC for a post-opposition procedure are implemented in the legislation, we oppose allowing third parties unlimited “second window” opportunities to seek review of patents, on subjective grounds, and on the basis of a preponderance of the evidence standard of proof for facts. This will subject patentees, especially patentees of limited means, to harassing tactics that could significantly limit the benefits of the patent system to them and the public. In addition, all of the necessary prerequisite changes – first-inventor-to-file, elimination of best mode, and elimination or restriction of the unenforceability defense must accompany the post-grant procedure. As with other sections of the legislation, the Coalition pledges to work with the Congress to develop a post-grant review procedure to achieve objectives foreseen by the NAS and FTC while providing the patentee with safeguards against serial challenges to provide a measure of “quiet title.”

Friday, April 27, 2007

Representative Darrell Issa, a California Republican and patent holder, also expressed concerns about the post-grant opposition procedure in the bill, saying it could allow challengers to "have bite after bite after bite" into a patent.

[This is in the context of a story on the hearing of April 26, see alsohttp://ipbiz.blogspot.com/2007/04/congressional-hearing-on-april-26-on.html]

Thursday, April 26, 2007

Fertility and Sterility to retract Cha paper

The original author of the KSOG/KJOG piece, JeongHwan Kim, wrote IPBiz:

I wonder whether FS understands the difference between plagiarism and duplication.I want to know why FS decided not to reveal the first author of the original. It sounds like SH Lee wrote both and I was simply one of "other authors" in KJOG piece.I want to know why FS wouldn't cross-link two articles to compare.I want to know whether we still need to declare re our responsibility as authors before submission to FS.

All papers that are submitted must report unpublished work and cannot be under consideration for publication elsewhere. If a manuscript contains more than 200 words of previously published text or if previously published figures or tables are submitted, written permission must be obtained from the holder of the copyright. Copies of permission letters must be submitted with the original manuscript. Material that is published without permission from the copyright holder will be considered duplicate publication, which is a serious offense.

Previously published material can be cited in a manuscript, but it must be indicated by quotation marks. If more than 200 words from a previously published manuscript appear in a manuscript that is submitted as an original work and if this material is not indicated with quotation marks, the material will be considered to be plagiarized. Plagiarism is also a serious offense.

IPBiz notes that, in a nutshell, Fertility and Sterility believes one can plagiarize oneself. That is, if authors A, B, and C publish in KJOG, and then authors A, B, and C publish in FS, the publication in FS is plagiarism.

Dr. Kim is raising an issue of old-fashioned plagiarism, wherein authors A, B, and C publish the work of author X in FS without giving credit to author X.

This brings up another interesting point.

The guidelines for Fertility & Sterility mention:

Original papers, contributed solely to Fertility and Sterility® and limited to the fields of fertility, sterility, or the physiology of reproduction, will be considered for publication. Authors are advised to keep a copy of all manuscripts submitted.

(...)

In an accompanying letter, authors should state that the material contained in the manuscript has not been published, has not been submitted, or is not being submitted elsewhere for publication.

(...)Prior to publishing, the author(s) must sign and return the "Assignment of Copyright and Financial Subsidy Disclosure Form."

It is not clear from these instructions that Fertility & Sterility requires each author of the submission to state that each author named has contributed to the work in the paper. It is not clear from these instructions that Fertility & Sterility requires each author of the submission to state that no contributor has been omitted. (ie, that there are no unnamed authors; note that the instruction says "original work," but does not say "original work by the named authors.") It is also not clear that Fertility & Sterility requires a statement that each author has actually read the submitted manuscript, an absence that would be totally distinct from practice at the USPTO, which requires a declaration from EACH named inventor. [see also commentary by LBE in 88 JPTOS 239, which indicates that the journal Science does not have a requirement that each named author reads the submitted manuscript.]

***An attempt was made to post the following on californiastemcellreport:

If one visits the website for Fertility & Sterility, one will find the following under DUPLICATE PUBLICATION:

All papers that are submitted must report unpublished work and cannot be under consideration for publication elsewhere. If a manuscript contains more than 200 words of previously published text or if previously published figures or tables are submitted, written permission must be obtained from the holder of the copyright. Copies of permission letters must be submitted with the original manuscript. Material that is published without permission from the copyright holder will be considered duplicate publication, which is a serious offense.

Previously published material can be cited in a manuscript, but it must be indicated by quotation marks. If more than 200 words from a previously published manuscript appear in a manuscript that is submitted as an original work and if this material is not indicated with quotation marks, the material will be considered to be plagiarized. Plagiarism is also a serious offense.

As noted on IPBiz, the second paragraph would indicate that the Fertility & Sterility guidelines on DUPLICATE PUBLICATION show that the use of "more than 200 words from a previously published manuscript" without enclosure by quotation marks is plagiarism. It would seem that Fertility & Sterility considers self-plagiarism to be plagiarism. Whether or not any individual thinks "you can (or cannot) plagiarize yourself," it is the rules provided by Fertility & Sterility that control submissions made to Fertility & Sterility.

Separately, as pointed out on IPBiz, plagiarism and copyright infringement are two different matters.

Further to discussions of the Verfaillie matter, note that one of the writers following this story is Eugenie Reich, who has separately written about the Purdue "bubble fusion" matter.

From Reich's article (with Peter Aldhous):

Now New Scientist has examined a US patent (number 7015037) granted in 2006 that covers the isolation and use of MAPCs. The patent is exclusively licensed to a company called Athersys of Cleveland, Ohio, which hopes to launch clinical trials of the cells to treat conditions including heart attacks and stroke. Within the patent are three images that appear to be duplicated from another paper from Verfaillie's group, published in 2001 in the journal Blood (vol 98, pp 2615-2625). These images relate to experiments in which MAPCs were grown in culture dishes and made to differentiate into other cell types, such as those found in bone, cartilage, fat and the linings of blood vessels. The images document the presence of proteins specific to each type of cell being produced. The problem is that in each case the duplicated image is used in the patent to describe the production of a different protein from that described in the Blood paper. In the most striking example, one of the duplicated images also seems to be used twice within the Blood paper itself, to represent the results from two different experiments. In the Blood paper, this image, which shows a series of three bands on a gel, is first used to represent a control for an experiment in which a culture of stem cells is made to differentiate into cells found in bone. What seems to be the same image is used later on the same page, though this time it is flipped over horizontally, producing a mirror image, and contains some small modifications (see top two images, right). Here, it is labelled as showing the production of collagen in a culture of stem cells made to turn into cells found in cartilage. n the patent, this flipped and modified image appears again, this time supposedly representing a bone-specific protein found in a culture of stem cells made to differentiate into bone cells (see bottom image, right). Stem cell biologists contacted by New Scientist are sure that the three images referred to above are duplicates. "They're quite clearly the same," says Jeanne Loring of the Burnham Institute for Medical Research in La Jolla, California. "It appears that a piece of data has been used multiple times to represent different things," agrees Arnold Kriegstein, who heads the programme in developmental and stem cell biology at the University of California, San Francisco.

As noted on IPBiz: Thomson's US 5,843,780, which issued Dec. 1, 1998, is based on application 08/591,246, filed on January 18, 1996. Loring's application 9/199,703 was filed on November 24, 1998, one week before Thomson's '780 patent issued.

3M is a member of the Coalition for 21st Century Patent Reform, which includes some pharma companies (eg, AstraZeneca, Eli Lilly, GlaxoSmithKline, Hoffman-La Roche, Johnson & Johnson, Merck, Millennium Pharmaceuticals).

BusinessWeek noted that the Biotechnology Industry Organization [BIO] has expressed opposition to several aspects of the bill.

One notes that smaller entities are not represented at the April 26 hearing, with the manifest diversity along technology lines, rather than entity-size lines, even though aspects of the bill will have disparate impact according to entity size.

Some recent posts on cwdgonline discuss a review of Carhart's book in North and South by Rick Sauers.

LBE mentioned the Carhart book in the December 2006 issue of JPTOS (88 JPTOS 1068); from footnote 24:

The book, Tom Carhart, Lost Triumph: Lee's Real Plan at Gettysburg and Why it Failed, Putnam's Sons, New York, 2005, gives details of the use of the Spencers at pages 203, 210, and 217. The book generally praises Custer as a hero for preventing a Confederate incursion by forces of J.E.B. Stuart which incursion might have altered the outcome of Pickett's Charge. A foreward by James M. McPherson states: "Most important, we have not previously comprehended Lee's full tactical plan for July 3 in which Stuart's cavalry was to have an essential part. No historian before Tom Carhart has pieced together the whole story from the scattered bits of evidence." In fact, a book published three years previously had advanced the same theory: Paul D. Walker, The Cavalry Battle That Saved the Union: Custer v. Stuart at Gettysburg, Gretna, LA: Pelican, 2002, as discussed in Lawrence B. Ebert, You Only Look Twice, 18, Intellectual Property Today (Nov. 2005). Observation by this author of various Civil War buffs suggests that the "take it and make it your own" approach involved here was very successful. In Civil War history, and in innovation generally, the general population is more appreciative of the person who successfully brings the idea to market than the guy who had the idea first. There is a bit of this involved in NTP v. RIM, 418 F.3d 1282 (CAFC 2005).

***A post on the thread on cwdgonline referenced work by William Brooke Rawle. Text from a book entitled The Right Flank at Gettysburg: An Account of General Gregg's Cavalry Command, Showing Their Important Bearing Upon the Results of the Battle, by Rawle (available on the internet) gives clear evidence that Carhart's theory has been around for a while. Separately, text from McClellan suggests the Carhart theory is backwards.

On July 2, Hampton's brigade had repulsed an attack by Kilpatrick by way of Hunterstown. On the morning of July 3, Stuart had moved to a position to the left of Ewell, both to secure Ewell's left AND to view Federal lines. Stuart's purpose, according to Stuart, was to effect a surprise on the rear of the Federal main line of battle. Rawle writes: "It was obvious that he [Stuart] intended to accomplish this by way of the Baltimore Pike and the roads hereafter described, simultaneously with Pickett's attack in front." Rawle quotes Stuart: "Had the enemy's main body been dislodged, as was confidently hoped and expected" (by Pickett's charge) "I was in precisely the right position to discover it and improve the opportunity." According to Rawle, referring to Stuart by NOT quoting Stuart, Stuart did not accomplish his goal because Hampton's and Fitzhugh Lee's brigades debouched into open ground, disclosing Stuart's movement to the Federals.

At this point in his text, Rawle does NOT mention the cannon shots fired by Stuart, which "disclosed" Stuart's presence to the Federals.

At page 19 of Rawle's text, there is mention of the Spencer repeating carbines used by Custer's forces. At page 23, Rawle attributes the success of the Union forces to the use of their sabres, en masse.

***Relating this to Carhart's book, it is Rawle who states: It was obvious that he [Stuart] intended to accomplish this by way of the Baltimore Pike and the roads hereafter described, simultaneously with Pickett's attack in front. Thus, one can easily state that Rawle had a theory published in 1878 which anticipated Carhart's by more than 100 years.

However, of the direct quotes of Stuart, "Had the enemy's main body been dislodged, as was confidently hoped and expected" [by Pickett's charge] "I was in precisely the right position to discover it and improve the opportunity," one can infer that Stuart planned TO BENEFIT FROM THE RESULTS OF Pickett's attack, not to help CAUSE the results.

The failure of Rawle to discuss Stuart's cannon shots, an action NOT consistent with maintaining secrecy, is problematic.

***According to the preface of Rawle's book, this material first appeared in "The Philadelphia Weekly Times" on September 14, 1878. This was part of a series entitled CHAPTERS OF UNWRITTEN HISTORY IN THE ANNALS OF WAR.

Page 5 of the Rawle book refers to Major H.B. McClellan. The text of Rawle's book as to McClellan is puzzling. "It has been insinuated by [McClellan] who indeed if he were present, might be presumed to have been in a position to judge correctly, that the cavalry operations on the right flank at Gettysburg resulted victoriously for his cause. That this was not the case will be shown conclusively."

On the morning of the 3d several hours were consumed in replenishing the ammunition of the cavalry. Jenkins' brigade, commanded by Colonel M. J. Ferguson, of the 16th Virginia Cavalry, was added to Stuart's command, but by some bad management was supplied with only ten rounds of cartridges to the man. At about noon Stuart, with Jenkins' and Chambliss' brigades, moved out on the York turnpike, to take position on the left of the Confederate line of battle. Hampton and Fitz Lee were directed to follow. Breathed and McGregor had not been able to obtain ammunition, and were left behind, with orders to follow as soon as their chests were filled. Griffin's 2d Maryland battery, which had never before served under Stuart, accompanied Jenkins and Chambliss. Stuart's object was to gain position where he would protect the left of Ewell's corps, and would also be able to observe the enemy's rear and attack it in case the Confederate assault on the Federal lines were successful. He proposed, if opportunity offered, to make a diversion which might aid the Confederate infantry to carry the heights held by the Federal army.

For an excellent paper on inherency, see Dan Burk and Mark Lemley's article, coincidentally titled, "Inherency," published in 2005:

Inherency is also perhaps the most elusive doctrine in all of patent law. The cases appear to flatly contradict each other, are often accompanied by dissents, and in the last three years alone have triggered one abortive en banc rehearing and strong calls for a second. In particular, the courts have split sharply over whether an element can be inherent in a prior art reference even if people of ordinary skill in the art do not appreciate the existence of that element.

In this Article, we argue that this confusion is largely unnecessary. While many courts have recited as gospel the idea that inherency requires knowledge or appreciation of the inherent element, in no case does the application of the inherency doctrine actually turn on knowledge of the element. Rather, the inherency cases are all ultimately about whether the public already gets the benefit of the claimed element or invention. If the public already benefits from the invention, even if they don't know why, the invention is inherent in the prior art. If the public doesn't benefit from the invention, there is no inherency.

Some commentators have come to the conclusion that after Schering, the only factor required for inherency is proof that the thing was in fact present, n42 but that overstates the case.

(...)

Most notable is the decision in Schering Corp. v. Geneva Pharmaceuticals, Inc. n49 Schering patented loratadine, branded as the allergy medicine Claritin, and later patented a metabolite of loratadine that is inherently produced in the human body when loratadine is ingested. n50 When Schering's patent on loratadine expired, Schering began suing generics who copied loratadine after the first patent expired for violating the newer metabolite patent. n51

(...)

Rather, the court found the metabolite patent inherently anticipated because the public would necessarily obtain the benefit of the metabolite by ingesting and metabolizing loratadine. n55(...)

Schering and the rejection of Elan seem to have set the Federal Circuit firmly on the right course, recognizing that knowledge is not required for inherency.

See also footnote 10 of Festo, Foreseeability, and the Wright Brothers, IPT, page 8, February, 2004: The 1914 resurrection of the Langley Aerodrome in the Wright Brothers saga shows how difficult it is to prove what was, and was not, known at a particular point in time. In an inherent anticipation context, see Schering v. Geneva, 339 F3d 1373 (CAFC 2003).

In 1991, the Federal Circuit decided the seminal case relating to inherent anticipation, Continental Can Co. USA v. Monsanto Co. n42 This case involved a patent, the '324 patent, entitled "Ribbed Bottom Structure for PlasticContainer," an invention for a "plastic bottle whose bottom structure has sufficient flexibility to impart improved impact resistance, combined with sufficient rigidity to resist deformation under internal pressure." n43 One claimed feature of the '324 patent was that its ribs were hollow. n44

(...)

[Of the Schering matter] Furthermore, it was undisputed that when the '716 patent application was filed, one of ordinary skill in the art would not have recognized that administration of loratadine to humans results in the production of DCL n118 so it could not be said that this knowledge was in the public domain.

(...)

It explained that "anticipation requires only an enabling disclosure" so the relevant question [*845] was whether the '233 patent enabled DCL. n128

(...)

It concluded that because "the inherent result of administering loratadine to a patient is the formation of DCL[,] the '233 patent... provides an enabling disclosure for making DCL." n130

(...)

Judge Lourie questioned the court's finding of enablement in the '233 patent for the production of DCL. The judge acknowledged that were loratadine "in actual public use prior to the filing of [*846] a patent application on its metabolite, the metabolite will also have been in public use and hence will be unpatentable." n137 However, Judge Lourie believed that the fact that the "patent simply included a minimal, boilerplate statement of how to use"loratadine, i.e. administering the drug to humans, was "hardly an enabling disclosure of how to make any metabolites, whatever they might turn out to be, sufficient to anticipate them by inherency." n138 [IPBiz note: the "benefit to the public/public use" argument advanced by Judge Lourie was rejected by the CAFC, not adopted by the CAFC.]

IPBiz notes that Smith did NOT cite the Lemley/Burk article. Smith DID cite a 1999 article by LBE:

Lawrence B. Ebert wrote in November 1999 that Atlas Powder stands for the proposition that "one can't patent 'scientific understanding' of that which was already being done." n70 It is possible to read these cases narrowly, merely limiting the Continental Can test when the inherent element is solely the understanding of the process which is already occurring in the prior art.

***LBE appreciates the citation to the 1999 article. Just to further refine, here is some text from "Inherent Difficulties," Intellectual Property Today, page 28 (November 1999)-->

To give fuller context to the quote by Smith, here is more text from the 1999 article:

In this, Atlas Powder appears as a "scientific understanding" case much as In re King. One can't patent "scientific understanding" of that which already was being done. Although the particular prior art documents did NOT explicitly recognize that air may act as the sole sensitizer (absence of subjective knowledge of the authors of the prior art), the documents taught explosive compositions in which air did act as a sole sensitizer, as measured by objective knowledge. Thus, it is true that the recognition that interstitial and porous air were inherent must be measured against the knowledge of one of ordinary skill. The case of Mehl/Biophile Int. v. Sandy Milgraum 99-1038 (decided Sept. 30, 1999) contains the same references to Titanium Metals and In re King as does Atlas Powder. n5 At issue in Mehl was a method of hair depilation, comprising certain steps. The CAFC again found inherency, although there was an additional argument not present in Atlas Powder. "Where, as here, the result [depilation] is a necessary consequence of what was deliberately intended, it is of no import that the article's authors did not appreciate the results. See W. L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983)".

And here is the buckyball hypo:

To illustrate one issue in the interpretation of Continental Can, consider the discovery of buckyballs. In 1984, workers at Exxon disclosed the existence of C60, with the formula as determined by mass spectrometric measurement n6 and a way to make said C60. (J. Chem. Phys., 1984, 81, 3322). They did not disclose the correct structure of C60; Professors Smalley and Kroto proposed the structure of C60 to be that of a truncated icosahedron in 1985. This was not known to be correct until after the work of Huffman and Kratschmer in 1990. Now, assuming that the synthesis of Exxon always led to C60 with the icosahedral structure, would a patent claim to C60 in 1990 (with the truncated icosahedral structure) be inherently anticipated by the Exxon work in 1984, even though no one knew the structure in 1984, and in fact could not have proved the structure until 1990? Assuming that one of ordinary skill would recognize the inherent property, albeit at a later date, one might think there would be inherent anticipation. (Of course, a 1990 claim to merely C60 would be explicitly anticipated by the written description and enablement of the 1984 reference.) IPBiz notes that, in this hypo, the public was not obtaining any "benefit" from buckyballs prior to 1990 (benefit post 1990 is not clear either), but IPBiz reiterates the inherent anticipation conclusion, in spite of Burk/Lemley.

The article "Inherent Difficulties" cited In re King, 801 F.2d 1324: King was an appeal to the CAFC of a Board rejection for anticipation. The claim at issue in King was to a method of enhancing in a predetermined way color effects produced by ambient light while controlling light intensity comprising several steps. The Board established a prima facie case of anticipation, based on inherency, n4 and the appellant lost for failure to rebut the case. 801 F.2d at 1327. Issues in King are not unrelated to certain rejections of claims of Thomson over Hogan and Williams in the current re-examination of the Thomson / WARF patents concerning human embryonic stem cells.

At trial, Apotex argued that a prior art process (nominally making PHC anhydrate)inherently made SmithKline's PHC hemihydrate (claimed in US 4,721,723), butApotex could not prove precisely when PHC hemihydrate came into existence.Citing to Schering v. Geneva, 339 F.3d 1373, 1377 (CAFC 2003), the CAFCreiterated that inherent anticipation does not require a person of ordinary skill to recognize the inherent disclosure in the prior art at the time of the prior art.n9 The CAFC adjusted what Apotex needed to prove. Apotex did not need to prove that it was impossible to make the anhydrate without hemihydrate; Apotex needed to show that the natural result flowing from making the anhydrate was the hemihydrate. Put differently, the CAFC said it was irrelevant if pure anhydrate [without hemihydrate] could be made using the prior art reference; the CAFC said it was enough if the prior art disclosed and enabled a way to make the anhydrate that naturally results in the hemihydrate. Schematically, it is sufficient if there is one pathway that naturally (inevitably?) makes the hemihydrate, even if there is another pathway that does not make thehemihydrate. Ironically, it was evidence submitted by SmithKline that led to the conclusion that practicing the prior art naturally results in the production of the hemihydrate.

[IPBiz note: this undercuts the Burk/Lemley conjecture about "public obtaining benefit," and, of course, was published BEFORE 47 Wm and Mary L. Rev. 371 (Nov. 2005)]

***To get back to beginning, one might take issue with the assertion in the 271 blog of an "excellent paper on inherency."

Patent reform: what to do about interested third parties in post-grant review?

Further to the discussion of post-grant review / post-grant opposition, one aspect of the proposed cancellation proceeding not present in the currently available re-examination is the ability to use declarations.

But does the introduction of "hired guns" into a post-grant proceeding really help in weeding out "bad patents"? What if the declarant has some form of conflict-of-interest?

In the context of declarations used by the patent applicant, a failure to disclose a relationship to the applicant can constitute inequitable conduct. Refac Int'l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1581-82 (Fed. Cir. 1996); Paragon, 984 F.2d at 1191-92. See previous IPBiz post, Ferring v. Barr. Split on inequitable conduct at CAFC. But what about a benefit to a nominally third party declarant that will ensue if the declarant's statements are accepted?

The so-called "second window" of post grant review opens up all kinds of interesting problems.

On April 25, the Purdue Exponent presented an editorial entitled Academic squabble hides breakthrough, which included the text:

But, more importantly, technology that could be doing our nation and the world service is being held hostage by a battle in the scientific community.

If the technology really does exist, it should be put to use as soon as possible. Both Taleyarkhan and Purdue do not seem to have interests other than their own in mind, as evidenced by both's unwillingness to make information on the experiment and the inquiry public.

US 5,072,412, entitled User interface with multiple workspaces for sharing display system objects, was issued December 10, 1991, based on application 07/030,766 filed in 1987. There are three inventors, apparently all working (at the time) at Xerox PARC. To date, it has been cited by 251 U.S. patents, most recently in US 7,197,515 (Declarative solution definition).

A lawsuit was filed on 18 April in ED Texas District Court (Marshall, TX) by intellectual property holding company IP Innovation and its parent company, Technology Licensing.

AppleInsider writes: The disputed section refers to the technique of creating a window on a computer's screen with controls that switch between views of multiple associated display objects within the window, erasing one view as the user selects another while still giving a spatial frame of reference and the same general interface during the switch.

Is this another example of innovative work by Xerox, that did not benefit Xerox? A third party targeting Tiger and Leopard?

See http://www.reghardware.co.uk/2007/04/25/apple_sued_over_common_ui_element/

***Also

Techliberation has a post Tabbed Windows: Patented!; of the patent filed by Xerox:

It’s got all the elements that make software patents so pernicious: it’s extremely vague, making it impossible for other software companies to be sure whether their products infringe on it. It’s extremely broad, apparently covering a variety of general characteristics of windowing systems. As the Ars article indicates, there’s likely to be prior art. Finally, it’s extremely wordy, with 62 loquacious claims and dozens of pages describing this “technology” in excruciating detail.

The post has aspects of "plagiarize with pride" from the Harvard Business Review:

Apple and Microsoft copied each other promiscuously (well, OK, Microsoft mostly copied Apple) and consumers benefitted from it. Apple certainly would have liked to prevent Microsoft from copying their innovations (and in fact, they tried very hard to do so) but they ultimately were not able to do so. Does anyone think that consumers would be better off today if the courts had prohibited Microsoft from imitating Apple’s UI innovations?

One commenter wrote the following:

Tim, please tell us your understanding of how patents are associated with innovation. Hopefully, your explanation will account for the half dozen or so theories developed by economists in the past few decades, or even hundred years. Also, detail how you interpret "to promote the progress," and how that has been associated with patents and innovation by policy makers and courts. It seems that you have a certain conception of your own, but I don't want to put words into your mouth.

As for who would argue that the above patent should have been granted? Well, I'm guessing that a certain scholar that supports relatively obvious patents for inventions without unclear commercial value, may support it. However, he would probably argue that the patent's scope should be interpreted narrowly, and its scope further limited by technical disclosure in the claim. Of course, I could tell you who it is, or simply do a write-up on IPcentral about him:)

***Separately on Apple -->

Robert Mullins of IDG reported: Legal and business experts will have a lot to learn from how the case against former Apple Inc. lawyer Nancy Heinen grinds its way through the courts.

Because most cases of stock options backdating by U.S. public companies have been settled out of court, and because Heinen is planning to fight her charges, the case could be one of few played out in open court, legal analysts say.

(...)

Heinen is alleged to have falsified board meeting minutes to make it look as though the board approved stock options grants in 2000 and 2001 on dates that the board hadn't met.

(...)[An SEC] investigation concluded that while Jobs knew of backdating and approved specific dates, he was not aware of the accounting implications of those moves. The board committee implicated two unidentified former employees in the fraud. Eventually, those two were identified as Heinen and Fred Anderson.

Thomson's US 5,843,780, which issued Dec. 1, 1998, is based on application 08/591,246, filed on January 18, 1996. Loring's application 9/199,703 was filed on November 24, 1998, one week before Thomson's '780 patent issued.

Loring's application had a claim to An isolated population of non-mouse embryonic stem cells, as may be seen in published application US 20020188963 (based on patent application 10/165765, filed June 6, 2002), which '765 application is a continuation of Loring's '703 application. [A preliminary amendment in the '765 application changed the claims, but because this was a paper, rather than an electronic, filing, the changed claims AND the fact that the '765 is a continuation do NOT appear in the published application.]

It is interesting to note that the article by Terri Somers in the San Diego Union Tribune entitled --Embryonic stem cell pioneer chose to publish, not patent-- contains the text:

The lack of interest in human embryonic stem cells was a result of several things, primarily the fact that scientists were immersed in mouse embryonic stem cells, said Loring, from the Burnham Institute.

Evidently, Somers did not review the patent application of Loring, which suggests that not all scientists were immersed in mouse embryonic stem cells (i.e., some scientists were claiming an isolated population of non-mouse embryonic stem cells.)

Thomson's '780 patent references Hogan's U.S. 5,453,357, and, of course, Bongso, et al., "Isolation and culture of inner cell mass cells from human blastocysts", Human Reproduction, 9:2110-2117, 1994. John Gearhart's US 6,090,622 (filed March 31, 1997) cites Thomson's '780 patent, and contains within its abstract: Primordial germ cells extracted from post blastocyst human embryos, such as from the gonadal ridges of a 8-11 week LMP human embryo, are disclosed. Gearhart also wrote: Any method which would allow production of human ES and EG would be desirable since, human EG cell lines would permit easier study of early human development, and the use of such human EG cell lines would enable the development of cell cultures for transplantation and manufacture of bio-pharmaceutical products.

****As an aside-->

ZDNet notes: a bill to limit emails and phone calls among elected New Jersey officials outside public meetings has been resurrected

Other provisions of the bill create new procedures designed to reduce litigation. Parties affected by issued patents would be allowed to file a post grant “cancellation petition," within 12 months of the issue explaining why the patent or claims in the patent should not have been granted. If they succeed, the patent office would cancel the whole patent or the challenged claims.

ZDNet did NOT mention the "second window" of review. As Senator Leahy put it:

§ 322.– The petition for cancellation can only be filed (1) within 12 months of the patent’s issue or reissue (known as the “first window”), or (2) if there is substantial reason to believe that the continued existence of the challenged claim is likely to cause the petitioner significant economic harm, the petitioner has received notice from the patent holder alleging infringement by the petition, or the patent owner consents to the proceeding in writing (known as the “second window”).

Thus, ZDNet omits mention of one of the more controversial provisions of the patent reform bill.

Mark Smith at Techlawforum wrote of KSR v. Teleflex: The KSR case may turn upon a little discussed case from 1976, Sakraida v. Ag Pro, Inc. In that decision, Justice Brennan declared a combination patent for removing cow manure from the floor of a dairy bar obvious. The language used is a stark contrast to the Federal Circuit’s “teach, suggest, motivate” test. In fact, the Court seems to require the patentee to satisfy a MUCH higher standard.

IPBiz is not sure what Smith means by "little discussed," because Sakraida is much discussed in the KSR briefs. The relevant text in Sakraida is:

We cannot agree that the combination of these old elements to produce an abrupt release of water directly on the barn floor from storage tanks or pools can properly be characterized as synergistic, that is, "result[ing] in an effect greater than the sum of the several effects taken separately." Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 61 (1969). Rather, this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations. Such combinations are not patentable under standards appropriate for a combination patent. Great A. & P. Tea Co. v. Supermarket Corp., supra; Anderson's-Black Rock v. Pavement Co., supra. Under those authorities this assembly of old elements that delivers water directly rather than through pipes or hoses to the barn floor falls under the head of "the work of the skillful mechanic, not that of the inventor." Hotchkiss v. Greenwood, 11 How., at 267. Exploitation of the principle of gravity adds nothing to the sum of useful knowledge where there is no change in the respective functions of the elements of the combination; this particular use of the assembly of old elements would be obvious to any person skilled in the art of mechanical application. See Dann v. Johnston, ante, at 229-230.

Though doubtless a matter of great convenience, producing a desired result in a cheaper and faster way, and enjoying commercial success, Dairy Establishment "did not produce a `new or different function' . . . within the test of validity of combination patents." Anderson's-Black Rock v. Pavement Co., supra, at 60. These [425 U.S. 273, 283] desirable benefits "without invention will not make patentability." Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S., at 153 . See Dann v. Johnston, ante, at 230 n. 4.

The juxtaposition of "not synergistic" followed by the words --Rather, this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations-- is puzzling.

The opinion in Anderson's Black Rock was by Justice Douglas, someone who was not patent friendly. Douglas wrote:

Each of the elements combined in the patent was known in the prior art. It is urged that the distinctive feature of the patent was the element of a radiant-heat burner. But it seems to be conceded that the burner, by itself, was not patentable. And so we reach the question whether the combination of the old elements created a valid combination patent.

(...)

A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here. It is, however, fervently argued that the combination filled a long felt want and has enjoyed commercial success. But those matters "without invention will not make patentability." A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 153.

For the purposes of this paper, innovation is defined as the “Advancement of Applied Technology”.

At the lowest level, innovation is a process used by engineers and inventors. However, from a higher level, innovation is a process that can drive a corporation’s overall process of R & D and corporate strategic development.

Still further, the innovation process spills over into many operational areas within an organization other than R&D, namely, marketing, legal, finance, and corporate strategy.

If you publish a plagiarized article in a college newspaper, odds are you will be fired immediately when the plagiarism is discovered. However, if you work at CBS or at the Harvard Law School, your chances are survival are much greater.

From the article: "The DP [Daily Pennsylvanian] does not tolerate plagiarism in any form..."

One notes that "success in the marketplace" is not a mitigating factor for plagiarism in the college newspaper business. Being a "good" plagiarist is not a defense.

***In a quirky followup to the University of Pennsylvania plagiarism matter, David Ryan at West Virginia University noted: The Daily Athenaeum ran a guest editorial by University of Pennsylvania student Jamie France titled "A survival guide for the college all-nighter."

The WVU newspaper used a service called "copyboy" to identify and to obtain the UP article: We ran the column from Copyboy, a service that features editor-submitted material from student newspapers across the country. It was funny, it was informative, and as Opinion Editor, I thought it might be worth a read.

And, of course, it was plagiarized. Ryan at WVU ended his piece with the words: We apologize for the running of this piece, and stress that we at the DA take the matter of plagiarism very seriously. Couric of course used the words of her producer, which had been plagiarized from the Wall Street Journal, but never said anything about plagiarism. Thus, when Ryan at WVU also wrote: it is unthinkable that anyone who had any respect for the trade would be tempted into passing off the work of others as their own, especially in editorials, IPBiz can only say YOU HAVE GOT TO BE KIDDING!

***In a separate, but not unrelated, matter, the article by Terri Somers which was published in the San Diego Union Tribune under the title Embryonic stem cell pioneer chose to publish, not patent was RE-PUBLISHED in The Paramus Post under the title Embryonic stem cell pioneer chose to publish, not patent. It's been up at The Paramus Post for a while but carries the dateline: By Terri Somers Monday, April 30 2007, 01:09 AM EDT Views: 28. Curiously, The Paramus Post piece does not cite, or otherwise reference, the previous article in the San Diego Union Tribune. Now, this case is similar to the WVU matter in that one publication (The Paramus Post) used material in a different publication (San Diego Union Tribune) but it is (presumably) different from the WVU matter in that there is no mention of the PRIOR publication ie, the Union Tribune article) within the LATER publication (the Paramus Post). Within BOTH the Union Tribune and Post stories is the line Thomson declined to be interviewed for this story. but one wonders WHICH story is "this" story?

Further, both stories include the text: "But Thomson's work was an advance, not an invention," said Loring, summing up the core argument of the patent challenge.

"Thomson made a very important contribution to science," said John Simpson of the Foundation for Taxpayer and Consumer Rights. "It just wasn't something that was patentable."

with the omission of the fact that Loring had a 1998 patent application with a broader claim to embryonic stem cells than found in any patent of Thomson.

The current posting on The Paramus Post website http://www.paramuspost.com/article.php/20070427180919793makes NO mention of the use of any wire service used for the story OR the fact that had been previously published. This is clearly "duplicate publication" of the type discussed in the Cha matter involving Fertility & Sterility. But once again one asks, can there be self-plagiarism?

Timothy Berners Lee has an interesting piece titled Vonage is the Latest Victim of Patent Abuse at american.com. The alleged patent abuse here is NOT by a so-called patent troll, but rather by Verizon.

The article begins:

Vonage, a leading Internet telephony company, appears before a federal appeals court today [April 24] to argue that it should be allowed to continue signing up new customers while it appeals the recent verdict that its products infringe three of Verizon's patents. A Virginia jury last month ordered Vonage to pay Verizon $58 million for infringing the patents, and Vonage was barred from signing up new customers. Given Vonage's precarious financial position, a permanent ban on signing up new customers would effectively be a death sentence for the company.

The case raises some troubling questions about America's patent system, which seems to allow a deep-pocketed incumbent to drive an innovative competitor out of business. Vonage pioneered the Internet telephony market, and has enticed more than two million customers away from Verizon and other telephone industry incumbents. But while Verizon hasn't been able to stop Vonage's momentum in the marketplace, they've found more success in the courtroom.

It's likely true that Verizon has lots more cash than Vonage. The issue is whether the Verizon patents are valid patents. If the patents are valid and infringed by Vonage, then Vonage should not be in the marketplace without a license from Verizon. "Plagiarize with pride" should not be a motto for business, contrary to the teachings of the Harvard Business Review.

Lee also wrote:

Theoretically, the patent office is only supposed to award patents for "non-obvious" patents, and the concept of converting between an IP address and a phone number certainly seems obvious. In an ideal world, the patents that were issued would be narrow enough that companies could "invent around" others' patents if they were unable to come to acceptable licensing terms.

Unfortunately, our patent system has long since departed from this ideal. In recent decades, the courts have dramatically lowered the bar for obviousness. As a result, some of the patents being granted are so broad that inventing around them is practically impossible. The patents that allowed NTP to win a $612 million settlement from BlackBerry maker Research in Motion, for example, essentially covered the concept of transmitting new email notifications wirelessly. There's no way RIM could have "invented around" that.

It's not clear at all that courts have dramatically lowered the bar for obviousness. The CAFC has required that, when multiple references are used against a patent claim, there be a "motivation to combine" the references written down, in order to prevent hindsight reconstruction. Thus, the KSR v. Teleflex case is tricky in that the CAFC didn't say the invention at stake wasn't obvious, they merely said the district court hadn't written down a motivation to combine.

Technology companies have responded to this proliferation of bad patents by engaging in the patent equivalent of nuclear stockpiling. By obtaining dozens, hundreds, or even thousands of patents, a company can develop a credible deterrent against patent lawsuits: if someone sues it for patent infringement, it will be able to find a patent the other company has infringed and countersue. Vonage's fundamental mistake was that it chose not to join this arms race. As a result, when Verizon sued, it was completely defenseless.

Lee didn't mention that the patent quality/"proliferation of bad patents" story is based on a methodology that allows the patent grant rate to be in excess of 100%. This shell game has been likened to three card monte. See Getting the Patent Reform Wars on Track. As to a general strategy of obtaining lots of patents and seeking cross-licensing, that's been around for years. Ask the petroleum companies or IBM. See also John R. Allison et al., Valuable Patents, 92 Geo. L.J. 435 (2004).

Lee also writes:

It's not clear how any of this promotes "the progress of science" as required by the Constitution. Because of the high cost and uncertainty of the patent system, most software companies don't even try to find patents they might be infringing. Instead, they sign cross-licensing deals with as many companies as possible, and they pray that the remaining companies won't sue them before they've had time to develop a patent war-chest of their own. This is great for patent lawyers, but it's not clear how anyone else benefits.

Lee neglects to mention how the purported "reformers" Jaffe and Lerner proposed a post-grant opposition system, which will create greater uncertainty and advances the prospects for patent lawyers. On that irony, see Post-Grant Opposition: a Bad Idea.

Lee mentions:

The court should also take advantage of Microsoft v. AT&T to reinstate the principle that software is not eligible for patent protection. That was the rule that was applied until the 1980s, when a series of rulings by the newly created Court of Appeals for the Federal Circuit effectively legalized software patents. The Supreme Court has never ratified that judicial innovation, and Microsoft v. AT&T gives the courts an excellent opportunity to remedy the Federal Circuit's mistake.

Patent stockpiling is a wasteful and counterproductive form of competition. If the Supreme Court and Congress choose to leave the current rules in place, we're likely to see a lot more cases of software companies being forced to spend their resources on patent lawyers instead of engineers.

There was NOT a previous principle that software was ineligible for patent protection, and one might note, depending upon what one means by software, software per se currently is not eligible for patent protection (but see copyright). We're really talking about "business methods" here. Further, one might contemplate what Microsoft v. AT&T is about.

***See alsohttp://www.techliberation.com/archives/042299.php

***The law review article "Valuable Patents" has the text:

A second explanation for the prevalence of small entities in litigation is rather more pessimistic than the first. Individuals and small entities may be more likely to sue than large companies because they have little to lose from entering into patent litigation. n145 Large companies in many industries hold patents for defensive purposes -- to deter other large companies from suing them. n146 The result is a sort of "mutually assured destruction" in which very few companies [*469] actually sue for patent infringement because they know that, if they do, their opponents will also be able to sue them for patent infringement. If there are any patent disputes at all between these companies, they tend to end in royalty-free cross-licenses. n147

Footnote 146 --> See, e.g., John H. Barton, Reforming the Patent System, 287 SCI. 1933 (2000) (discussing this defensive patenting practice); Hall & Ziedonis, supra note 7, at 107-10; Lemley, supra note 2, at 1504-05; Mark A. Lemley,Reconceiving Patents in the Age of Venture Capital, 4 i. SMALL & EMERGING Bus. L. 137, 143 (2000) ("One of the major reasons that companies get patents is that they're afraid that their competitors have them, and they don't want to be the only one left who doesn't have the ability to play in this game.").

"It's what I like to disparagingly refer to as 'mutually assured crap,'" said Greg Aharonian, a patent researcher and an oft-quoted critic of the U.S. Patent and Trademark Office. "It's like the Cold War strategy of mutually assured destruction."

If the context is "mutually assured crap," then one is dealing with a world in which everyone has bad patents which have claims that are being infringed by others. Of Lee's remark: --By obtaining dozens, hundreds, or even thousands of patents, a company can develop a credible deterrent against patent lawsuits: if someone sues it for patent infringement, it will be able to find a patent the other company has infringed and countersue--, a patent deterrent is only "credible" if the patent is valid and infringed.

The announcement reverberated immediately in Europe, where bitter campaigns over patents have been going on for months. Citing the OSDL patent commons project, Florian Mueller, founder of Europe's NoSoftwarePatents.com campaign, said: "It will only be a true protective shield if they gather patents that they can use to countersue the enemies of open source. The software patent game is like the Cold War: The only thing that protects you is the concept of mutually assured destruction."

A question posed to Dan Ravicher by Peter Williams on 5 Aug 2004:

Are any of these patents also violated by other operating systems which could lead to a Cold War stand-off based on 'mutually assured destruction' so that patents are not applied from any side?

A posting on 5. oktober 2004 included text:

MAD

Can we defend against patents by preparing to go on the offense?

During the cold war, nuclear catastrophe was averted by a policy ofmutually assured destruction ("MAD"). If any country dared to start anuclear war, the theory went, the devastation wreaked upon that countrywould be many times worse. Not just the nuclear powers were so protected.Through treaties and alliances, the allies of the great powers survivedunder a defensive MAD shield.

So too, in the field of patents, do large patent portfolios serve therole of stockpiled nuclear weapons. If a company with a large portfoliois sued, it will likely own other patents that are essential to thecompany that dared to sue. "Sue me," they say, "and I'll sue you backeven worse for patent infringement." In this way, a patent portfolio canbe a defense to litigation, because few will dare sue and risk their owndestruction.

citing to

Patents in an open source world, July 26, 2004

Lawrence Rosen also wrote:

Conduct a reasonably diligent search for patents we might infringe. At least search the portfolios of our major competitors. (This, by the way, is also a great way to make sure we're aware of important technology advances by our competitors.) Maintain a commercially reasonable balance between doing nothing about patents and being obsessed with reviewing every one of them.

The Carranza monument in the New Jersey's Pinelands

In re Omeprazole Litigation: inherent anticipation argued

Unresolved issues with inherent anticipation were apparent in the majority and dissenting opinions of In re Omeprazole Litigation. By a 2-1 vote, key claims of an Astra patent on omeprazole were invalidated.

The majority cited Mehl, 192 F.3d 1392. The majority also cited Schering v. Geneva, 339 F.3d 1373 for the proposition that inherent anticipation does NOT require recognition in the prior art.

The patent in question was US 6,013,281 [the '281 patent, to Astra], issued in 2000 but claiming priority back to 1995. This was a process patent for making the TABLET which is used to deliver omeprazole [Prilosec], which is an important part of the use of omeprazole, because omeprazole must reach the intestines WITHOUT being acidified in the stomach.

The odd twist in this case was that a Korean company, the Chong Kun Dan Corporation (CKD), began selling a form of omeprazole under the name “OMP” in Korea in 1993 and had a patent application filed in Korea in 1993. Astra sued CKD in Korea, and CKD initiated a proceeding with the Korean Patent Office (KIPO) for a finding of non-infringement. The only ’281 claim “limitation” missing from the Korean application is the language “thereby forming in situ a separating layer.”

Here's the rub: The CKD application disavowed a subcoating and disclosed no process conditions to form a separating layer in situ. BUT in the patent fight in Korea, Astra scientists argued that the CKD process (Method A) claimed in the CKD Patent Application resulted in the in situ formation of a separating layer in CKD’s OMP tablet, Omeprazole III, slip op. at 29 What one says in the context of a Korean patent litigation can return to haunt one in the United States, because both the US district court and 2 judges on the CAFC found that the testimony by Astra people in Korea overcame the disavowal by CKD about "forming in situ a separating layer." IPBiz thinks a key factor in this case is the quote from the district court: “If Astra had scientific proof with which to rebut or refute its prior admissions of inherency, it surely would have put on such proof. Astra did not.” Although NOT explicitly presented by the CAFC, it looks like the lack of enablement of "forming in situ a separating layer" in the Korean patent application WAS TRUMPED by Astra's admission in court. Astra COULD HAVE presented evidence of lack of enablement in the US district court, but they didn't, and thus were hoisted on their own petard.

In dissent, Judge Newman (who authored the Continental Can opinion) wrote: the court invalidates the patent on Astra's previously unknown process for producing an in situ polymeric sublayer for omeprazole. The emphasis might be on the word unknown. This is further seen in the text: No prior art describes the Astra process, and there is no evidence that a person of ordinary skill would have known of its existence. What is unknown cannot "anticipate."

The problem with Continental Can was that it did NOT explicitly say "when" the thing had to be known: Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed. Cir. 1991) (to anticipate, every element of the claims must appear in a single prior art reference, or if not expressly shown, then demonstrated to be known to persons experienced in the field of technology) These days, it is enough that the thing be known AT THE TIME OF LITIGATION, with of course a proof, at the time of litigation, that the thing was present at the time of the prior art (although not necessarily "known" at the time of the prior art.)

In fact, back in 1999 (before Schering v. Geneva, 339 F.3d 1373), LBE wrote in “Inherent difficulties,” Int. Prop. Today, Nov. 1999: To illustrate one issue in the interpretation of Continental Can, consider the discovery of buckyballs. In 1984, workers at Exxon disclosed the existence of C60, with the formula as determined by mass spectrometric measurement n6 and a way to make said C60. (J. Chem. Phys., 1984, 81, 3322). They did not disclose the correct structure of C60; Professors Smalley and Kroto proposed the structure of C60 to be that of a truncated icosahedron in 1985. This was not known to be correct until after the work of Huffman and Kratschmer in 1990. Now, assuming that the synthesis of Exxon always led to C60 with the icosahedral structure, would a patent claim to C60 in 1990 (with the truncated icosahedral structure) be inherently anticipated by the Exxon work in 1984, even though no one knew the structure in 1984, and in fact could not have proved the structure until 1990? Assuming that one of ordinary skill would recognize the inherent property, albeit at a later date, one might think there would be inherent anticipation. See Inherent Anticipation.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.